intellectual property teaching kit · ums are different from those for "traditional"...

Intellectual Property Teaching KitIP Advanced Part IPatents, utility models and designs Utility models

IP Advanced Part IUtility models

Part of the IP Teaching Kit

2 Intellectual Property Teaching Kit – IP Advanced Part I

Intellectual Property Teaching Kit – IP Advanced Part I 3

Table of contents

Content Slide Page

Introduction 4

About IP Advanced Part I 5

IP Advanced Part I 1 6

PATENTS

1 Patents 9

Slides 2 – 37 11

2 Patent case study 85

Slides 38 – 50 87

3 Patent exercises 115

Slides 51 – 79 117

UTILITY MODELS

4 Utility models 177

Slides 80 – 104 179

DESIGNS

5 Designs 231

Slides 105 – 129 233

6 Design case study 285

Slides 130 – 147 287

7 Design exercise 325

Slides 148 – 168 327

Terms of use 370

Imprint 371

EPO/OHIM Intellectual Property Teaching Kit – IP Advanced Part I 3


Introduction

Intellectual property (IP) reaches into everyone's daily lives. A basic awareness and understanding of IP is therefore essential for today’s university students, who are the engineers, researchers, lawyers, politicians, and managers of tomorrow.

It is vital that students become acquainted with elementary aspects of IP, so that they can benefit from it fully in whatever career they eventually pursue. Students and universities should be aware too of how they can utilise the incomparable wealth of technical and commercial information to be found in IP documentation, and understand the need for universities to convert their research into IP rights, manage their IP portfolios and engage in technology transfer to industrial partners for value creation and the benefit of society as a whole.

Last but not least, students and universities should be aware of the consequences of failing to protect IP assets correctly, including the risk of reverse engineering, blatant copying and even industrial espionage.

This is where the IP Teaching Kit (IPTK) comes in. Produced by the European Patent Office (EPO) in co-operation with the European Union Intellectual Property Office (EUIPO), the IPTK is a collection of materials – including PowerPoint slides, speaking notes and background information – which can be used to put together lectures and presentations on all kinds of IP, including patents, utility models, trade marks, copyright, designs and trade secrets. The materials can be tailored to the background of the students (science or engineering, business or law), their knowledge of the topic, the time available and their learning objectives.

With the IPTK you have at your disposal an extensive set of freely accessible, professional teaching materials which represents one of the most comprehensive IP teaching resources in the world.


About IP Advanced Part I

IP Advanced Part I is part of the IPTK. It has been designed for teachers of students with little prior knowledge of IP, in order to provide them with advanced teaching material about patents, utility models and designs.

In addition to the main presentations, IP Advanced Part I contains case studies and exercises on patents and designs that demonstrate their use in the real world.

IP Advanced Part I consists of ready-made PowerPoint slides with speaking notes and additional background

information. The speaking notes can be read out as they stand. The background information provides additional details which will help you prepare for the more advanced questions that students might have. It is not intended for this information to be included in the lecture.

For online access to the extensive IPTK collection, plus updates and further learning opportunities, go to www.epo.org/learning-events/materials/kit.html where you will also find a tutorial for teachers and lecturers.


Slide 1 IP Advanced Part I

Title slide

4 Utility models

178 Intellectual Property Teaching Kit – IP Advanced Part I Utility models


Utility modelsList of slides

Slide 80 Utility modelsSlide 81 Scope of protections of utility models

compared with patentsSlide 82 Example of a utility model (I)Slide 83 Example of a utility model (II)Slide 84 Different names for utility models

and patentsSlide 85 European countries in which utility

model protection is availableSlide 86 Utility model applications filed in

Europe (2002-2012)Slide 87 Scope of protection and exclusions (I)Slide 88 Scope of protection and exclusions (II)Slide 89 How to get utility model protectionSlide 90 Important requirements for utility

model applicationsSlide 91 State of the art for European patent

applicationsSlide 92 State of the art for utility modelsSlide 93 State of the art for utility models:

what happens in practiceSlide 94 Prior art searchesSlide 95 Inventive step Slide 96 Developing an IP strategy Slide 97 Comparison of costs – patent and

utility model applicationsSlide 98 Utility models: for and againstSlide 99 Total filing figures for various IP rights

2008-2010Slide 100 Relative filings in 2010 by continentSlide 101 Top 10 offices in 2010 for utility model

applicationsSlide 102 30 years of filing history for utility

model applicationsSlide 103 Recommendations and further readingSlide 104 Quiz

Utility models


Slide 80Utility models

WIPO (the World Intellectual Property Organization) defines the utility model (UM) system as follows:

"Like a patent, a UM confers a set of rights for an invention for a limited period of time, during which UM holders can commercially exploit their inventions on an exclusive basis. The terms and conditions for granting UMs are different from those for "traditional" patents. For example, UMs are issued for a shorter duration (7 to 10 years) and, at most offices, applications are granted without substantive examination. Like patents, the procedures for granting UM rights are governed by the rules and regulations of national intellectual property (IP) offices, and rights are limited to the jurisdiction of the issuing authority."

Intellectual Property Teaching Kit – IP Advanced Part I 181Utility models

This presentation is all about utility models.


Slide 81Scope of protections of utility models compared with patents

Utility models have many aspects in common with patents. In contrast to other intellectual property rights (such as designs, trade marks, copyright, etc.), utility models and patents may protect the same aspects of a technical invention (e.g. the technical details of a flight simulator comprising a robotic arm). Designs and trade marks can protect other aspects, but not the technical details.

A utility model is an exclusive territorial right which prohibits third parties from – making– selling– marketing– importing or – using

the protected subject-matter in the country in which it was registered.

However, while patents offer protection for methods and processes, this is not normally the case for utility models and depends very much on the national utility model law. This is a key aspect when talking about utility models, since there is no one single "European" utility model law, but instead many different national laws. In some countries, such as the UK, it is not possible to file utility models.

Students should be made aware that utility models are unexamined IP rights. That means that they are granted without substantive examination for novelty and inventive step. This is the reason why they can be registered within a matter of a few months of having been filed.

It is important to point out that aspects of utility model law can differ from country to country. This is also true for national patent laws. Strictly speaking, almost every bullet point on this slide should begin with the words 'In the majority of countries', as there are numerous exceptions. For example, French patent law does not stipulate the same examination procedure as German patent law with respect to inventive step. However, rather than detailing the exceptions, we have listed the major differences between utility model law and patent law that exist in most countries.

These aspects will be returned to in the slides that follow.

Utility models are registered intellectual property (IP) rights. Any interested party can consult the register to find the full details of registered utility models.

They are territorial rights that are valid in one country only, namely the country of the issuing authority. For example, a German utility model is only valid in Germany and does not offer protection in France or any other country.

Utility model applications must be filed individually with the individual national offices. There is no equivalent of the PCT or EP/EU route for utility models, although there are possibilities for filing utility model applications based on international or national patent applications, or vice versa

Utility models provide protection for technical inventions, but not normally for processes. Technical processes may be protected by patents. There may be other exceptions. For example, Germany will not register utility models for biotechnology inventions.

Utility models offer protection for a maximum of three to ten years. This limitation, in combination with the quick registration process, makes utility models attractive for inventions with shorter life-cycles.

Utility models do not normally involve a search report (exceptions include Austria, for example). In some countries (e.g. Germany), search reports are available on demand.

Utility models are not examined IP rights with respect to novelty, inventive step and industrial applicability. In other words, they are not examined for these aspects on registration. One exception to this is Brazil (similar examination as for patent applications).

In most countries, the validity of a utility model with respect to novelty and inventive step is only reviewed if it is challenged, i.e. in invalidation or infringement proceedings. Patents are granted following an examination procedure. A published (and granted) patent therefore offers more legal certainty than a registered and published utility model.

The procedural fees for utility models may be lower than those for national patent applications. However, the fact that utility models are available more quickly than patents appears to be more important than potential cost savings.


This slide compares some key aspects of utility

models with those of patent applications and

granted patents.

Both patents and utility models are registered

territorial rights offering protection for

technical inventions. In contrast to patents,

however, utility models are only available in

certain countries. Also, utility models must

be filed individually in each country, whereas

patent applications may be filed centrally

with the EPO or WIPO. Utility models offer

protection for up to 10 years, while patents

offer protection for 20 years

Utility models are normally registered without

a search report on the prior art, whereas such

reports are standard for patent applications.

Generally speaking, utility models are registered

and published within a few months, while

patent applications are normally published

after 18 months. The publication of the patent

application is a procedural step which takes

place before the application is examined.

The result of the patent examination procedure

is either the grant of a patent or the refusal of

the application.

In general, utility models are registered without

a substantive examination as to novelty,

inventive step and industrial applicability.

The novelty, inventive step and industrial

applicability of utility models is only reviewed

in revocation or infringement proceedings.


Slide 82Example of a utility model (I)

This example of a German utility model can be found in the register of the German Patent and Trademark Office (DPMA) athttp://register.dpma.de/DPMAregister/pat/register?AKZ=2020120065513&CURSOR=49

At first glance, it is not easy to distinguish it from a national patent application. It is the letter 'U' that indicates that this document is a registered utility model.

All utility models comprise the following components:

– an abstract– a description– claims– (normally) figures.

The utility model in our example protects a driving simulator that allows a normal car to be used to simulate driving. The simulator comprises a base plate and several actuators for moving the base plate. The wheels shown in the figure belong to a normal car. All other components of this car are not shown. The idea is to connect the base plate to the car via adapters. By using different adapters for different cars, the same base plate and actuators can be used for simulating the driving of a range of different cars.

Since this utility model is only a few pages long, it could be that it is intended to protect one aspect of a more complex invention for which a patent application might have been filed.


This slide shows an example of a German

utility model, or "Gebrauchsmuster".

It looks very similar to a German patent

application.

It can be identified as a utility model because

the publication number at (10) contains the

letter "U".

Unlike patent applications, the publication date

of the utility model – in this case 27 September

2012 – is very close to the application date,

6 July 2012. This is due to the fact that

utility models are registered if the formal

requirements are fulfilled. No search report or

subsequent examination phase is required.

Utility model applications comprise an abstract,

a description, claims and, normally, one or more

figures.


Slide 83Example of a utility model (II)

According to the German Ordinance Implementing the Utility Model Act (Utility Model Ordinance) at www.dpma.de the description must:

– specify the technical field to which the invention relates

– indicate the prior art known to the applicant which may be considered for the understanding of the invention

– disclose the technical problem underlying the invention

– indicate the invention for which protection is sought in the claims

– indicate the way in which the invention is capable of exploitation in industry

– state any advantageous effects of the invention with reference to the prior art indicated in the application

– describe in detail at least one way of carrying out the invention claimed, using, where appropriate, examples and the drawings.

The claims define the matter for which protection is sought in terms of the technical features of the invention.

The extent of the protection conferred is determined by the terms of the claims.

The essential features of the invention must be indicated in the first claim (principal claim).

Drawings may be added. For the representation of the invention, perspective views and exploded views may be used in addition to views and sectional views.

Further requirements for the example of German utility models can be found in the Utility Model Ordinance at www.dpma.de


All applications must contain a request for the

grant of a utility model, a description of the

invention, one or more claims, any drawings

referred to in the description or claims, and an

abstract.

The purpose of the abstract is to give brief

technical information about the disclosure

as contained in the description, claims and

drawings.

The claims in our example relate to a simulator

device.

It is not possible to get utility model protection

for the process of simulation in Germany,

although it could be the subject of a German

patent application.


Slide 84Different names for utility models and patents

This slide shows the different names for utility models around the world. It is important to be aware of these differences in order to avoid confusion and misunderstanding.

The terms or expressions for utility models are shown in blue, while the equivalents for European patents are shown in dark grey.

In the USA regular patents are called "utility patents" and should not be confused with utility model protection (see also www.uspto.gov/patents/process/index.jsp).

The Chinese expressions ("invention patent" and "utility model patent") are less confusing.

For more information about the situation in Australia, go to www.ipaustralia.gov.au/patents/types-patents/innovation-patent


This slide shows the different names for utility

models around the world. In Australia they

are referred to as innovation patents, while

in China they are utility model patents. In

Indonesia, they are known as simple patents.

Ireland has short-term patents, which have a lot

in common with utility models in other states.

The United States Patent and Trademark Office

differentiates between design patents, plant

patents and utility patents. It does not offer

utility model protection. The term "utility

patent" is used for a regular patent application.

In Australia, innovation patents last for

eight years. They are designed to protect

inventions that do not meet the inventive

threshold required for standard patents.

They are a relatively quick and inexpensive

way to obtain protection for new devices,

substances, methods or processes.

In the People’s Republic of China, utility

models are known as "utility model patents"

and patents as "invention patents".


Slide 85European countries in which utility model protection is available

Utility models (or short-term patents) are only available in half of the 38 member states of the European Patent Organisation (see www.epo.org/about-us/organisation/member-states.html).

Ireland and Slovenia have short-term patents rather than utility models. The Netherlands used to offer utility models (or short-term patents) prior to the amendment of the Netherlands Patent Act in 2008.

According to the Slovenian Intellectual Property Office, the short-term patents available in Slovenia basically correspond to utility models like those available, for example, in Germany (see www.uil-sipo.si/sipo/activities/patents/frequently-asked-questions/).

Worldwide, the availability of utility models is difficult to assess because of the differences in laws and names. WIPO, for example, only publishes figures relating to its own member states (see www.wipo.int/sme/en/ip_business/utility_models/where.htm).

According to a study conducted in 2004 by a Japanese researcher, about 130 countries have introduced the utility model system to supplement national patent law (see IIP bulletin 2004, 39).


This slide shows the European countries in

which utility model protection is available.

In contrast to patents, utility models – known

as short-term patents in Ireland and Slovenia

– are only available in half of the 38 member

states of the European Patent Organisation

(EPO).


Slide 86Utility model applications filed in Europe (2002-2012)

The filing figures for utility model applications in Europe are fairly stable. More than 50% of applications are filed in Germany, a country that has a long tradition of utility models. As we will see later, only 10% of all filings worldwide occur in Europe.

These and many other statistics are available from the WIPO website at www.wipo.int/ipstats/en/ As you can see, the database does not have a full set of data for each country/year.

2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012Albania - - - - - - - 1 1 - -Austria 983 1 050 1 067 989 1 019 871 861 926 882 812 711Bulgaria 127 127 96 88 96 - 143 178 178 224 210Czech Republic 1 121 1 117 1 213 1 185 1 082 1 125 1 183 1 382 1 608 1 646 1 863Denmark 404 357 339 306 335 305 241 207 235 190 187Estonia 72 67 85 87 75 124 140 132 166 88 74Finland 512 496 496 439 520 506 422 475 557 481 474France - 369 303 390 381 330 288 413 484 506 428Germany 23 428 23 408 20 286 20 418 19 766 18 083 17 067 17 306 17 005 16 024 15 497Greece 204 68 38 - 581 31 33 29 30 - 17Hungary 351 316 296 268 285 251 224 254 275 270 261Italy 2 807 2 727 2 411 2 148 2 857 2 559 2 200 2 307 2 462 2 470 2 758Poland - 759 680 644 678 649 719 780 945 1 003 997Portugal 80 73 74 82 101 86 109 127 127 126 90Slovakia - 338 348 377 343 321 326 331 387 426 392Slovenia - 25 15 25 18 - 20 15 12 - -Spain 3 103 3 000 2 904 2 855 2 824 2 666 2 682 2 560 2 640 2 598 2 539Turkey - 1 212 - - - 3 011 2 992 2 882 3 033 3 280 3 788


The filing statistics for the ten years from

2002 to 2012 show that utility models are used

extensively in Germany, Turkey, Spain, Italy and

the Czech Republic.

The total number of filings has remained

relatively stable. As we will see later, more

than 80% of the total number of applications

worldwide are filed in the People’s Republic

of China.


Slide 87Scope of protection and exclusions (I)

Like patents, utility models offer protection for technical inventions. The exclusions from protection in utility model laws are very similar to those of the corresponding national patent laws.

Individual aspects of utility model law may vary from country to country, since there is no single, harmonised European utility model law. That means that when filing the same application in several countries, applicants need to be aware of each national law in order to avoid their application being rejected.


In most countries, utility models offer

protection for technical inventions, including

apparatus and devices, chemical substances

and medicinal products.

Utility model protection is not available,

however, for discoveries, scientific theories,

mathematical methods, blueprints, patterns,

teaching methods and rules for playing

games, accounting systems and programs for

computers, process inventions, for example

manufacturing and working processes,

biotechnological inventions or animal and plant

varieties.


Slide 88Scope of protection and exclusions (II)

One example of the differences in national utility model laws can be found in Austria, where 'program logic on which programs for data processing systems are based' is regarded as an invention under the Utility Model Law and can thus be protected, whereas 'computer programs as such' are excluded from protection (see www.patentamt.at/Media/PA144.pdf ).

As we have already seen, processes normally cannot be protected by utility models. Australia provides an exception to this rule.

In Australia, innovation patents last for eight years. They are designed to protect inventions that do not meet the inventive threshold required for standard patents. It is a relatively quick and inexpensive way to obtain protection for new devices, substances, methods or processes.

To read more about Australian IP law, go towww.ipaustralia.gov.au/patents/types-patents/innovation-patent


Utility models cannot be granted for inventions

the publication or exploitation of which would

be contrary to public policy or morality.

The following example shows not only that

differences in utility model laws exist between

different countries, but also that different

interpretations can exist within one utility

model law.

For example, under Austrian Utility Model Law,

program logic on which programs for data

processing systems are based is regarded as an

invention, whereas computer programs as such

are excluded from protection.

In most countries utility models cannot protect

technical processes. Australia is one exception

to this.


Slide 89How to get utility model protection

With patent applications we have seen that the applicant has several options for filing a single application, including the World Intellectual Property Organization (WIPO) and the European Patent Office (EPO), which may then result in a plurality of national patents.

Utility models have to be filed separately in each country. Some countries also allow a utility model application based on an international patent application.

Applicants may file further applications within 12 months of the first filing.

The Paris Convention provides for the right of priority in the case of patents (and utility models, where they exist), marks and industrial designs. This right means that, on the basis of a regular first application filed in one of the contracting states, the applicant may, within a certain period of time (12 months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other contracting states. These later applications will then be regarded as if they had been filed on the same day as the first application. One of the great practical advantages of this provision is that, when applicants desire protection in several countries, they are not required to file all their applications at the same time, but instead have 12 months (in the case of utility models) at their disposal to decide in which countries they wish to seek protection and to organise the filing procedure (see also www.wipo.int/treaties/en/ip/paris/summary _paris.html).

In 1995 a proposal for a European Parliament and Council Directive relating to the legal arrangements for the protection of inventions by utility models was made (see also http://ec.europa.eu/internal_market/indprop/docs/model/util_en.pdf ). The Commission decided to withdraw this proposal in 2005, due to objections from several member states. The Commission considered that it was unlikely to advance further in the legislative process.


Applicants wishing to file an application for

a utility model in several countries, whether

in Europe or elsewhere, have to file individual

applications for each country concerned.

They can file further applications within

12 months of the first filing.

Patents, trade marks and designs can be filed

centrally, but this option does not exist for

utility models.

In 1995 a proposal was submitted for a

European Parliament and Council Directive

relating to the legal arrangements for the

protection of inventions by utility models.

However, the Commission decided to withdraw

this proposal in 2005, on the grounds that

it was unlikely to advance further in the

legislative process.


Slide 90Important requirements for utility model applications

In Europe, the requirements of national utility model laws are often similar to those for patents under the European Patent Convention (EPC).

The Austrian Utility Model Law, for example, states that "On request, utility models shall be granted for inventions in all fields of technology, provided they are new, based on an inventive step and susceptible of industrial application."

Austrian law also states the following:

"The utility model shall entitle the utility model owner to exclude others from industrially producing the subject matter of the invention, putting it on the market, offering it for sale or using it or importing or possessing it for the said purposes. In case of a process it shall be effective to the products directly obtained by such process."

"The utility model protection shall begin on the day of the official publication of the utility model and end no later than ten years following the end of the month in which the utility model application was filed."

"However, no examination for novelty, inventive step, industrial application as well as whether the applicant is entitled to utility model protection shall be made during the application proceeding."

The differentiation between substantive requirements and further requirements is based on European patent law. If all requirements of the patent law are fulfilled, then a patent may be granted for a technical invention.

Novelty, inventive step and industrial applicability are often mentioned as substantive requirements of patentability. However, there are further requirements that an application has to comply with before a patent can be granted. These include sufficiency of disclosure and clarity. The examination as to whether all these requirements are met can be a lengthy procedure.

In the case of utility model applications, the requirements are generally not examined, so the procedure up to registration of a utility model normally takes just a few months.

It is important for students to understand this major difference. Patents are examined registered IP rights and utility models are generally unexamined registered IP rights.


In Europe, the requirements of national utility

model laws are often similar to those for

patents under the European Patent Convention

(EPC).

However, novelty, inventive step and industrial

applicability are not normally examined when

a utility model application is registered and

published.

This means that an application can be directed

at an invention that is neither novel nor

inventive and still be granted a utility model

that becomes effective on the day of its official

publication.

As a result, the validity of a utility model in

terms of novelty, inventive step and industrial

applicability is not known on the date of its

registration and publication.

The further requirements listed on the slide

are usually examined during the registration

procedure. These requirements include the

fact that the specification must disclose the

utility model in a manner sufficiently clear and

complete for it to be carried out by a person

skilled in the art.

The claim or claims must be clear and concise

and be supported by the description, and they

must exactly define the matter for which

protection is sought. Amendments to a utility

model application that would extend beyond

the scope of the application as originally filed

are not allowed.


Slide 91State of the art for European patent applications

This slide reminds students how the state of the art is defined for patent applications. The following slide, covering the definitions used for utility models, allows a direct comparison to be made.

The state of the art (or prior art) is defined as being everything made available to the public by means of written or oral description, by use, or in any other way, before the date of filing.

Students might like to consider what the consequences might be if 'prior art' were to be defined differently in different countries.


This slide explains what is meant by the state

of the art for European patent applications.

The state of the art is defined as being

everything made available to the public

anywhere by means of written or oral

description, by use, or in any other way,

before the date of filing.

Most countries offering utility model protection

apply this definition in order to determine

whether an invention is new.


Slide 92State of the art for utility models

There are differences in the definition of the state of the art for utility models from country to country. These exceptions open up new possibilities for applicants wishing to register utility models.

If they want to file an application in several countries, applicants need to be aware of the national variations.

This slide explains the exceptions in Austria and Germany (see also www.dpma.de/english/utility _models/utility _model_protection/index.html).

In Germany, the following is not considered to belong to the state of the art for utility models:

– prior use outside Germany– public oral disclosure– applicant's own use or publication in the previous six

months.

At this point, you might like to ask students to come up with possible scenarios in which the absolute novelty criterion for patents would lead to a different state of the art than the less strict relative criterion of novelty for utility models. An example is shown on the next slide.


Utility model law in European countries is not

harmonised with respect to the definition of

prior art.

In Germany and Austria, for example, the state

of the art comprises all technical products or

processes published before the date of filing

of the utility model application. This includes

the applicant's own scientific publications or

presentations of a new product at a fair. If you

apply for utility model registration within six

months from the publication of your invention,

utility model protection is still available. This is

called the novelty grace period.

In Germany, the state of the art does not

include prior use outside Germany or public oral

disclosure.


Slide 93State of the art for utility models: what happens in practice

The example shown on this slide is intended to illustrate the problems that may be caused by exceptions or other provisions in national utility model laws.

The state of the art in Spain is deemed to comprise anything that, prior to the date of filing the application, has been disclosed in Spain, by written or oral description, by use, or in any other way.

It also comprises the contents of Spanish patent applications and utility model applications, European patent applications designating Spain in respect of which the designation fee for Spain has been paid in due time, and international (PCT) patent and utility model applications designating Spain for which the ‘national phase’ in Spain has been properly entered into.

The Bulgarian manufacturer of the hammock might be of the opinion that prior use in his country is sufficient to prevent others from filing a utility model application in another country. However, only a written publication available in Spain would really allow him to invalidate a Spanish national utility model. Prior use in Bulgaria would not be sufficient.


There are differences in the way the state of

the art is defined in different countries.

This slide shows a fictitious example of a

hammock which is produced and used in

Bulgaria.

Unless the Bulgarian manufacturer described

the hammock in a printed document in Spain,

Spanish tourists, for example, could apply for

and still get utility model protection for it in

their home country.

Spanish utility model laws do not regard prior

use in Bulgaria – that is, outside Spain – as

belonging to the state of the art.

If the Bulgarian manufacturer had published

a document about the hammock in Germany,

it could be used against a utility model in

Germany.

That document could not, however, be used

against the utility model in Spain, since only

publications in Spain are relevant.

In practice, though, the widespread availability

of documents through the internet means

that many documents that were previously

considered to be "national" have become

available worldwide.


Slide 94Prior art searches

The key message of this slide is that, in contrast to patent applications, the registration and publication of a utility model does not normally involve a search. That means that the public and/or the applicants are not necessarily aware of the prior art that is relevant for a registered utility model, unless they carry out their own search.

As soon as a utility model is challenged, however, a search report is required in order to examine novelty and inventive step.

In Germany, applicants or anybody else may choose to request a search report at any time.

An example relating to the application looked at earlier in the module can be found at: https://register.dpma.de/DPMAregister/pat/register?AKZ=2020120065513&CURSOR=49

The Austrian Utility Model Law stipulates the following:

"If there are no objections against the publication and the registration of the utility model, the Patent Office will provide the search report, which will indicate the documents determined by the Patent Office at the time the search report is provided that can be taken into account to assess novelty and inventive step."

It goes on to stipulate that the search report must be based on the claims.


Before filing a utility model application,

applicants should be aware of the relevant prior

art. They can find out about this by searching

public databases such as Espacenet and

DepatisNET.

Prior art searches are not normally offered by

national patent offices. Austria is an exception

to this, and in Germany, applicants are free to

choose whether they want the German Patent

and Trademark Office to produce a search

report or not. In fact, in Germany, anybody can

request a search.

After registration, a search for prior art

documents might be necessary as part of

revocation proceedings, where another

party seeks to invalidate a utility model, or

infringement proceedings, where a court

examines the validity of a utility model within

the context of an alleged infringement.


Slide 95Inventive step

Potential differences between the notion of inventive step for patents and inventive step (or inventiveness) for utility models add even more complexity.

The question of inventive step is, however, not immediately relevant for utility models since utility models are not normally examined for inventive step at the time of registration and publication. The inventive step may be examined, however, if a utility model is the subject of:

– revocation proceedings (when another party seeks to invalidate a utility model)

– infringement proceedings (when a court examines the validity of a utility model within the context of an alleged infringement).

Different practices with respect to inventive step can potentially lead to different outcomes in different national litigation proceedings.

Here are some examples of differences between patent law and utility model law.

IrelandIn Ireland, the specification of a short-term patent (utility model) application may not include more than five claims. The requirements of novelty and industrial applicability apply, but instead of non-obviousness, it is sufficient for the invention to be "not clearly lacking an inventive step". Neither a search report nor evidence of novelty in the form of a foreign patent specification is required in order for registration of a short-term patent.

AustraliaIn Australia, innovation patents last for eight years. They are designed to protect inventions that do not meet the inventive threshold required for standard patents. It is a relatively quick and inexpensive way to obtain protection for a new device, substance, method or process (see also: www.ipaustralia.gov.au/get-the-right-ip/patents/types-of-patents/innovation-patent/).

In some countries, the differences between the inventive step requirements for patents and utility models have been discussed by the most important courts in the country, e.g. in the Demonstrationsschrank ("demonstration cupboard") decision of the Federal Supreme Court (File No. X ZB 27/05) of 20 June 2006 in Germany, which brought the requirements for inventive step for patents and utility models more closely into line in that country.


In some countries, including Ireland and

Australia, for example, there is a difference

between the requirements for inventive step

for utility models and those for patents.

Some sources highlight the difference by

referring to "inventive step" for patent

applications and "inventiveness" or "innovative

step" for utility models, although the two

expressions can often be used interchangeably.

The potential difference for the inventive

step requirement is, however, only one

argument in favour of utility models.

Applicants may want to seek protection of

the same invention by both a patent – for up

to 20 years – and a utility model, for fast

availability of initial protection.

The conditions governing the coexistence

of patents and utility models for the same

invention depends on national law.


Slide 96Developing an IP strategy

This slide looks at the various strategic possibilities that utility models offer to applicants.

Depending on the national law concerned, applications can be filed at various stages. Applicants can choose to register a utility model as strategic IP tool, together with applications for patents and other IP rights.

In some countries it is possible to file a national utility model from a pending European patent application. In Germany and Austria, for example, applicants who become aware of a potential infringement may, subject to obtaining a translation of the patent application into German, obtain a utility model in a matter of weeks based on a pending European patent application.

The German Utility Model Law provides for a split-off utility model from an existing patent application (see also the German Patent and Trademark Office's brochure on utility models, www.dpma.de/english/utility _models).

Before the expiry of 10 years from the filing date, a utility model may be split off from a patent application for the same invention. The utility model application must be filed (together with the splitting-off declaration) within two months after the conclusion of the examination of the patent application (see also www.dpma.de/english/service/glossary/s_z/index.html).

In China, utility models cannot be converted into invention patents. However, dual filing of applications for invention patents and utility models is possible in order to obtain early protection. Upon notification of the grant of the patent, the utility model must be abandoned (see www.epo.org/searching/asian/china/faq.html#faq-493).

In China, only one patent can be granted for the same invention. However, where the same applicant applies for a utility model patent and an invention patent for the same invention on the same day, if the utility model patent acquired earlier has not yet been terminated and the applicant waives his rights, the invention patent will be granted (see Patent Law of the People's Republic of China, Article 9 and http://english.sipo.gov.cn/laws/lawsregulations/201101/t20110119_566244.html).


Depending on the national law concerned,

applications for utility models can filed at

various stages.

A utility model based on a patent application

may be filed on the same day, or later.

In some countries it is possible to split off a

national utility model from a pending European

patent application, or to convert the utility

model application into a patent application.

Applicants can also choose to file an application

for a utility model without a patent application

for the same or a similar invention.

Together with other IP rights such as designs

and trade marks, this gives applicants and

inventors a wide range of strategic flexibility.


Slide 97Comparison of costs – patent and utility model applications

The lower costs for utility models are often mentioned as an advantage for small and medium-sized enterprises. However, when analysed over a period of several years, the total costs might not be substantially different from those for national patents and patent applications.

In this slide, it has been assumed that:

– the attorney fees are similar for both types of applications

– a patent is granted after around 4-5 years – the time axis is not linear

The fee structure for the two procedures differs in that:

– for patents/patent applications the applicant/proprietor pays annual renewal fees

– for utility models the applicant/proprietor pays fees for several years in advance.

The main advantage of utility models is their early registration (three months after filing) compared with several years for patents.

Reminder: Utility models are registered, but unexamined. Their validity with respect to novelty and inventive step is therefore unknown.

From a cost perspective, the differences between utility models and patents appear to be less relevant.

A major difference lies in the frequency and number of payments. Once a patent has been granted, renewal fees have to be paid annually. With utility models, the applicant has to pay in advance to cover several years.

As the total costs might not be all that different after several years, it is the strategic value for the inventor that is more relevant. Granted patents are based on a thorough examination process, while utility models offer fast, but unexamined protection.


This slide compares fees for a utility model

application with those for a realistic example of

a national patent application.

The total fees might not be all that different

when we look at a period of several years. It is

the strategic value for the inventor that is more

relevant.


Slide 98Utility models: for and against

The strategic potential of utility models is unique within the category of registered IP rights.

On the one hand a utility model offers protection for technical inventions, like a patent. On the other hand it is an unexamined registered IP right, like registered trade marks and designs.

You could ask your students to discuss the advantages of these two aspects.

Patents offer protection for technical inventions but the search and examination phases preceding the grant of a patent or the refusal of an application may last several years.For some inventions this time period might be too long, and that's where utility models might be particularly useful. An inventor can file a patent application and in parallel get protection for his invention after a few months via a registered utility model (where available).

Remind the students that the central filing of one application for several countries is not possible.


Utility model applications can be filed when

needed at different times in different countries

depending on national utility model law and

the strategic preferences of the inventor.

Although procedural fees may be lower than

for national patent applications, applicants are

advised to consult a professional for drafting

utility model applications.

The requirements for utility model applications

are similar to those of patent applications

and the procedure of filing and prosecuting

applications requires professional experience.

It is very important to remember that utility

models are registered but unexamined IP rights.

Registration takes place within a few months.

The inventor may thus have an IP right at hand

when going to market with a new product.

The examination for novelty and inventive step

is postponed as long as the utility model is not

challenged in litigation. This causes more legal

uncertainty than with granted patents.

Utility model revocation proceedings may be

expensive if the losing party has to bear the

costs, including those incurred by the opponent.


Slide 99Total filing figures for various IP rights 2008-2010

The figures on this slide were obtained from the WIPO IP Facts and Figures 2012 report.

Utility models Trade marks Patents Industrial designs2008 313 000 5 473 000 1 915 000 557 0002009 399 000 5 185 000 1 846 000 587 0002010 496 000 5 588 000 1 979 000 669 000

They reveal that:

– utility models are used less than the other three registered IP rights

– utility models have the strongest growth (especially in China – see next slides)

– trade marks are by far the most frequently used IP right.


The filing figures for utility models, patents,

trade marks and industrial designs in the period

2008 to 2010 reveal that, although they are

used less than the other three IP rights, utility

models have recorded the highest growth rate.

These figures were obtained from WIPO's

IP Facts and Figures 2012 report.


Slide 100Relative filings in 2010 by continent

The figures on this slide were published in the WIPO IP Facts and Figure 2012 report.

Utility models Trade marks Patents Industrial designsOceania 2.5 1.6 1.1North America 9.0 26.6 5.1Latin America 0.7 9.5 2.6 1.9Europe 10.5 35.6 17.4 9.1Asia 88.5 41.1 51.3 81.8Africa 0.02 2.3 0.6 0.7

Utility models statistically play a role in just two continents: Asia and Europe.

The percentage for Africa is 0.02 %, only just above zero.

Utility models are not known in North America, which is why there is no entry in this column.


The 2010 figures for IP rights filings by continent

– also from WIPO's IP Facts and Figures 2012

report – reveal that utility models are primarily

used in Asia.

The chart on this slide compares percentages

of total filings, not absolute figures. The bars in

each colour add up to 100%.

When we look at utility models, indicated by

the grey bars, we can see that just over 88% are

filed in Asia and around 10% in Europe, leaving

less than 1% in the rest of the world.

Utility models are unknown in North America.


Slide 101Top 10 offices in 2012 for utility model applications

The figures on this slide were sourced from the WIPO Statistics Database in June 2014.

This table shows the top offices with respect to total filing numbers for utility models in 2012.

Interestingly, Brazil is listed as number 8 worldwide, while Latin America as a continent is statistically speaking virtually irrelevant in the worldwide comparison of total utility model filing numbers (see previous slide).

China is top of the list in terms of the total number of filings.

2012China 740290Germany 15497Russian Federation 14069Republic of Korea 12424Ukraine 10217Japan 8112Turkey 3788Brazil 2997Italy 2758Spain 2539Czech Republic 1863


This chart shows that, in 2012, almost 90% of all

utility model filings worldwide occurred in the

People’s Republic of China, which has seen an

enormous increase over recent years.

This information was sourced from the WIPO

Statistics Database in June 2014.


1982 1983 1984 1985 1986 1987 1988 1989 1990 1991 China - - - 5 174 9 673 16 706 22 400 20 727 27 615 33 282 Europe 49 357 50 214 50 689 52 893 51 957 28 272 25 332 26 060 24 716 25 906 Japan 202 702 205 215 202 164 204 803 204 199 201 609 171 656 153 277 138 272 114 674 Republic of Korea 10 669 11 485 14 765 18 548 22 401 24 773 22 677 21 530 22 654 25 895 Russian Federation - - - - - - - - - -Ukraine - - - - - - - - - -

Slide 10230 years of filing history for utility model applications

The figures on this slide were obtained from the WIPO Statistics Database.

Illustrating 30 years of filing history, the graph very clearly shows that the countries with the highest filing numbers are located in Asia and Europe.

At first glance, the presence of continents (Europe) and individual countries (e.g. China and Japan) might give the impression that the graph is comparing apples and oranges. The intention, however, is to show that as far back as 1982, more than 80% of filings were made in Asia (2012: 92%), and 20% in Europe (2012: 6.3%).

A comparison by continent would hide the fact that the majority of utility model applications filed in Asia in the 1980s occurred in Japan, and in 2012 in China.

The changes in Asia are due to a number of reasons.

The reinstitution of the patent system in China in 1985 introduced the concept of invention, utility model and design patents. Filing figures for utility model patents (as well as for invention patent applications) have risen steadily since then.

The 1987 amendment of the Patent Law in Japan allowed multiple claims for patent applications and resulted in a significant shift in filings from utility models to patents.

In 1993 Japan amended its Utility Model System and abandoned substantive examination of utility models at the time of registration. Another significant shift of filings from utility models to patents was the result.

In Europe filings fell from around 50 000 in 1982 to fewer than 25 000 in 1990, before rising again above 50 000 in 2012. These developments have not been analysed.

More information can be found on the WIPO website at www.wipo.int/ipstats/en/statistics/models/

1992 1993 1994 1995 1996 1997 1998 1999 2000 2001China 44 369 47 499 45 511 43 741 49 604 50 129 51 397 57 492 68 815 79 722Europe 29 303 34 439 35 883 36 224 37 367 38 579 37 427 39 185 39 367 38 276 Japan 94 601 77 101 17 531 14 886 14 082 12 048 10 917 10 283 9 587 8 806 Republic of Korea 28 665 32 205 39 790 59 856 68 822 45 809 28 890 30 650 37 163 40 804Russian Federation - 1 193 1 756 2 039 2 379 2 356 2 723 3 444 4 631 6 029Ukraine - - - 125 126 135 137 204 276 432

2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012China 93 139 10 9115 112 825 139 566 161 366 181 324 225 586 310 771 409 836 585 467 740 290Europe 34 343 43 020 45 725 48 168 50 047 39 225 4 8561 49 429 52 527 52 048 52 392Japan 8 603 8 169 7 986 11 387 10 965 10 315 9 452 9 507 8 679 7 984 8 112Republic of Korea 39 193 40 825 37 753 37 175 32 908 21 084 17 405 17 144 13 661 11 854 12 424Russian Federation - 7 622 8 948 9 473 9 699 10 075 10 995 11 153 12 262 13 241 14 069Ukraine 622 839 5 232 7 286 8 171 - 9 600 9 205 10 685 10 431 10 217


Looking at this graph, we can see that filing

figures in Japan and China have changed

dramatically over the last 30 years.

30 years ago utility models were mainly filed

in Japan and Europe, with, as of 1985, a few

thousand in China. By 2012 the situation was

very different in Asia, with 740 290 filings in

China and 8 112 in Japan, while in Europe the

figure – 52 392 – was very similar to what it

had been in 1982.

There are a number of reasons for these

developments in Asia.

In 1987 the Japanese Patent Law was amended

to allow multiple claims for patent applications.

This resulted in a significant shift from utility

models to patents.

In 1993 Japan amended the Utility Model

System and abandoned the examination

of utility models at the time of registration.

The result was a further significant shift from

utility models to patents.

In 1985 the reinstitution of the patent system

in China introduced invention, utility model

and design patents. Filing numbers for utility

models (as well as for patent applications)

have increased steadily since then.


Slide 103Recommendations and further reading

Anyone thinking of drafting and/or filing a utility model application should consult a professional first.

It is only too easy to overlook, say, a technical detail when drafting an application, and it is normally not possible to correct such errors after the application has been filed.

For more information see the following websites:

– World Intellectual Property Organization (www.wipo.int)

– Country profiles (www.wipo.int/directory/en/)

– Directory of Intellectual Property Offices (www.wipo.int/directory/en/urls.jsp)

– The patent offices of the EPO member states (http://www.epo.org/about-us/organisation/

member-states.html)– The websites of other national IP offices


Anyone considering filing a utility model

application should consult a professional first.

More information can be found on the websites

shown here.


Slide 104Quiz

1. Name three differences between patents and utility models.

Answer:– Utility models are normally unexamined registered

IP rights (exception: Brazil) and patents normally registered examined IP rights (exception: France).

– The duration of protection for patents is 20 years compared with a maximum of 10 years for utility models.

– Patent applications may be filed centrally with WIPO and the EPO.

2. Are utility models available in:

– all European states? (Answer: No)– all EPO member states? (Answer: No)– all EU member states? (Answer: No)

3 (a). What is the difference between "relative" and "absolute" novelty?

Answer: Absolute novelty means that any prior art worldwide is used for the assessment of the validity of the patent or the utility model. Relative novelty means that prior art in the country of application is relevant, but not prior art from other countries.

3(b). Some countries only assess relative novelty when examining the validity of a utility model. What are the consequences of this assessment?

Answer: A utility model may still be filed in one country for an invention that was already in use in another country before the date of filing of the utility model.

4. Are inventions in published utility models novel and inventive?

Answer: It depends. The answer to this question is often only investigated during litigation, in other words after the utility model concerned has been published.

5. Is the inventive step/inventiveness criterion always the same for utility models and patents in any one country?

Answer: It depends on national law and current practice.

6. Can a utility model offer protection for:

– a simulation process? (Answer: Normally not; depends on national law)

– a simulator? (Answer: Yes)

Terms of use


The IP Teaching Kit has been produced by the EPO in co-operation with the EUIPO.

The content provided in this IPTK is for training and information purposes only. The Information is of a general nature only and not intended to address the specific circumstances of any particular case, individual or entity. It cannot be guaranteed by the EPO and the EUIPO that the information is always comprehensive, complete, accurate and up-to-date. Consequently, no responsibility for any loss or damage that may arise from reliance on the information is accepted by the EPO and the EUIPO. The information in no case constitutes professional or legal advice.

Users may modify or translate the IPTK and any of its parts on condition that the EPO and EUIPO is credited as the provider of the original and that it is clearly stated that changes have been made to the original material, that the modified or translated version has not been authorised by the EPO and EUIPO, and that the EPO and EUIPO shall not be responsible for the correctness of any such modified or translated version. Any other reference to the EPO and the EUIPO, and in particular their official logo, shall be removed from any such version.

Users shall give the EPO and EUIPO free of charge an electronic copy of the modifications or translations together with the right to further distribute them, if it so wishes, as part of the IPTK, as an additional version or an alternative language version. In such cases, the EPO and EUIPO shall mention the author of the modifications or translations if requested to do so.

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For online access to the extensive IPTK collection, plus updates and further learning opportunities, go to www.epo.org/learning-events/materials/kit.html where you will also find a tutorial for teachers and lecturers.


Imprint

Produced byEuropean Patent Office (EPO) and European Union Intellectual Property Office (EUIPO)

Published byEPO Munich2nd editionISBN 978-3-89605-156-1

Concept and co-ordination European Patent Academy

Content provided by EPOEUIPOCommunity Plant Variety Officeip4inno project (http://www.ip4inno.eu)

Individual modules were produced and/or edited byGraham BarkerSilvia BaumgartRobert HarrisonAnu IdiculaIngrida Karina-BerzinaJohn Mc ManusSérgio Maravilhas LopesAnna Yotova

Final editingEPO Language Service

Design EPO Graphic Design Munich

Photos Cover: Thinkstock

IPTK can be downloaded free of charge from the EPO website at www.epo.org/learning-events/materials/kit.htmland from the EUIPO website at https://euipo.europa.eu

© EPO 2016

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European Union Intellectual Property Officewww.euipo.eu

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